Death By A Thousand Cuts? Court Of Appeal Refers Trade Mark Dilution Questions To ECJ

In the recent decision of Intel Corporation Inc v CPM United Kingdom Limited1, the Court of Appeal referred certain questions to the European Court of Justice, asking to what extent brands with a huge reputation should be protected against trade mark 'dilution'. At the same time the Court expressed its own view that a narrow interpretation of the concept is to be preferred.

Background

This is an appeal by Intel Corporation ("Intel") from a High Court decision of Patten J on 26 July 2006 (which in turn was an appeal from a Trade Marks Registry decision of Mr Reynolds) on the issue of the registrability of word mark 'Intelmark', registered in class 35 for "marketing and telemarketing services."

The High Court held that Intel has a huge reputation in the word mark 'Intel' for microprocessor products and multi-media and business software. Even though end consumers generally do not purchase from Intel directly, many computer manufacturers use the slogan 'Intel Inside' which has contributed to the reputation of the mark, such that anyone seeing the mark will associate it with Intel. Intel has a large number of registrations all related to computer goods and services and all dissimilar to the services of the disputed mark. The disputed mark, 'Intelmark', was decided below to have been unused at the date of registration.

Legal issues

On appeal from the Registry to the High Court, Patten J held that "the reputation enjoyed by the INTEL mark would be sufficient for the average consumer to focus on INTEL in INTELMARK at least so as to bring to mind the INTEL mark" (para.42). The issues on appeal to the Court of Appeal were:

Is the mere "bringing to mind" of an earlier mark with a reputation enough to prevent a later registration? And

Is it an infringement of a registered mark which has a reputation if a defendant uses (for dissimilar goods or services) a mark which merely "brings to mind" the registered mark?

In his leading decision, Jacob LJ set out Articles 4(4)(a) (relating to registrability) and 5(2) (relating to infringement) of the Trade Marks Directive 89/104 and summarised the issue before him as "whether Intel's registrations for dissimilar goods preclude use of the Intelmark for CPM's dissimilar services."

He briefly reviewed the relevant European case law, quoting Advocate-General Jacobs' summary of the concept of trade mark 'dilution' in Adidas-Salomon v Fitness World ([2004] FSR 21). Pursuant to Article 5(2) the Advocate-General stated...